Teresa Giudice LLC

Trademark Trial and Appeal Board

Jan 2, 2015

No. 85367151 (T.T.A.B. Jan. 2, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Teresa Giudice LLC
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Serial No. 85367151
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Richard Blank, Esq.,
for Teresa Giudice LLC.
Erin M. Falk, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Adlin, Gorowitz, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Teresa Giudice LLC (“Applicant”) seeks registration on the Principal Register of
the mark SKINNYLICIOUS (in standard characters) for “olive oil” in International
Class 29.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due to a likelihood of
confusion with the identical mark SKINNYLICIOUS (in standard characters),

1 Application Serial No. 85367151 was filed on July 8, 2011, based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
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registered for “food seasonings; salad dressing; sauces” in International Class 30
and “restaurant and bar services” in International Class 43.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed.
We affirm the refusal to register.
Evidentiary Issue
The Examining Attorney objects to an article Applicant submitted for the first
time with its brief on the basis that it is untimely. We grant the objection and have
given this evidence no consideration. See Trademark Rule 2.142(d), 15 U.S.C.
§ 2.142(d); In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011); In re
Giovanni Food Co., 97 USPQ2d 1990, 1990-91 (TTAB 2011); see also TBMP
§ 1207.01 (2014).
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

2 Registration No. 4145567, issued May 22, 2012.
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1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”).
1. Similarity of the Marks
Applicant’s mark and the cited registered mark consist entirely of the word
SKINNYLICIOUS in standard characters. The marks are identical.
Applicant argues that the marks differ in connotation and commercial
impression when considered in connection with the respective goods and services.
We disagree. We find that, when used in association with food products, both marks
connote “skinny” or lighter foods that are “delicious.”
The first du Pont factor weighs heavily in favor of a likelihood of confusion.
2. Similarity of the Goods
We next consider the similarity of the goods and services, the second du Pont
factor. It is not necessary that the goods and services be identical or even
competitive to support a finding of likelihood of confusion. Rather, it is sufficient
that the goods and services are related in some manner, or that the circumstances
surrounding their marketing are such that they would be encountered by the same
persons in situations that would give rise, because of the marks, to a mistaken
belief that they originate from the same source or that there is an association or
connection between the sources of the goods and services. In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009).
The greater the degree of similarity between the marks, the lesser the degree of
similarity between the goods and services necessary to support a finding of
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likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
When the marks are identical, as they are here, it is only necessary that there be a
viable relationship between the goods and services to support a finding of likelihood
of confusion. In re Iolo Techs. LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). It is
sufficient for a finding of likelihood of confusion if confusion is likely with respect to
use of the mark on any item that comes within the description of goods in the
application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.net Inc., 90
USPQ2d 1393, 1397 (TTAB 2007).
Applicant’s goods are “olive oil.” For our analysis under the second du Pont
factor, we need not address the services identified in the cited registration, only the
goods: “food seasonings; salad dressing; sauces.”
The Examining Attorney made of record 17 existing use-based third-party
registrations for olive oil and either sauces, salad dressings, or both.3 Although
these registrations are not evidence that the marks shown therein are in use or that
the public is familiar with them, they suggest that Applicant’s goods and the goods
identified in the cited registration are of a kind that may emanate from a single
source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB
2012); In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). In this
case, we find that these third-party use-based registrations support the conclusion
that the goods are related.

3 See April 19, 2013 Office Action at 4-23; November 21, 2013 Final Office Action at 2-24
and 28-40.
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The Examining Attorney also made of record Internet evidence demonstrating
that both olive oil on the one hand and sauces or salad dressings on the other
emanate from the same sources under the same mark, including the following:
• ELENA’S olive oils and pasta sauces, including olive oil-based sauces;4
• BERTOLLI red sauces and olive oils;5 and
• KALDI cooking sauces and olive oil.6
Based on the record evidence, we find that there is a relationship between olive
oil and salad dressing and sauces. Therefore, the second du Pont factor also
supports a finding of likely confusion.
3. Channels of Trade
Applicant makes several arguments regarding the third du Pont factor, the
similarity or dissimilarity of established, likely-to-continue channels of trade. These
arguments are unsupported by any record evidence. For example, Applicant
referenced specimens submitted by the owner of the cited registration during
prosecution of its SKINNYLICIOUS mark, but did not make the specimens of
record.7 It is well-established that the Board does not take judicial notice of records
residing in the Patent and Trademark Office. See, e.g., In re Sela Prods., LLC, 107
USPQ2d 1580, 1583 (TTAB 2013); In re Jonathan Drew Inc., 97 USPQ2d 1640, 1644
n.11 (TTAB 2011); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290,
1293 (TTAB 1986) (stating that “we do not take judicial notice of application and

4 April 19, 2013 Office Action at 33-35.
5 November 21, 2013 Final Office Action at 48-51.
6 Id. at 52-57.
7 See Appeal Brief at 8, 7 TTABVUE at 9.
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registration files that reside in the Patent and Trademark Office on the basis of
their mere identification in briefs”). Moreover, we must look to the goods as
identified in the involved application and cited registration, not extrinsic evidence of
actual use. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (stating that “[i]t was proper . . . for
the Board to focus on the application and registrations rather than on real-world
conditions”); Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which sales of the goods are directed.”).
We disagree with the Examining Attorney that the identified goods are
presumed to travel in the same channels of trade to the same classes of purchasers
simply because they are unrestricted.8 That presumption arises only when the
goods are legally identical, and they are not here. See, e.g., In re RiseSmart Inc., 104
USPQ2d 1931, 1935-36 (TTAB 2012). We also disagree with Applicant that its goods
– “olive oil” – are necessarily sold in food store sections different from all of the
broadly identified registered goods, i.e., “food seasonings; salad dressing; sauces.”
There simply is no record evidence on which to base such a conclusion.
We find that the third du Pont factor is neutral.

8 See Examiner’s Brief at unnumbered p. 11, 9 TTABVUE at 12 (citing In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
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Conclusion
In sum, the first and second du Pont factors weigh in favor of a finding of
likelihood of confusion, the third factor is neutral, and there is no record evidence
concerning any other du Pont factor. We therefore find that Applicant’s mark
SKINNYLICIOUS so resembles the cited mark SKINNYLICIOUS as to be likely to
cause confusion when used in association with the identified goods.
Decision: The refusal to register Applicant’s mark is affirmed.